Trademark overprotection panel, Suffolk

Second Annual Intellectual Property & Innovation Conference Suffolk University Law School

NCSG

The State of Trademark “Overprotection” by Courts and the PTO. What Happens When Institutions Overprotect Trademark Rights?

Moderator: Leah Chan Grinvald, Associate Dean for Academic Affairs and Professor of Law, Suffolk University Law School

Panelists:

Alexandra Roberts, Associate Professor of Law, University of New Hampshire School of Law

Overprotection. One type is granting protection to matter that hasn’t earned protection—doesn’t actually function as a mark; aren’t used in a TM way. Second, scope: matter that does qualify for protection but maybe narrowly so.  Rule of doubt is a way to wear PTO down.  Many examples: Apple store layout; many Trump marks that are ornamental/informational.

Validity takes over in the courts: applicants and the PTO spend a lot of time crafting an exquisite origami crane, and courts then ask “is this paper folded?” They don’t ask what the mark is for, whether it’s a design/word mark, etc.   Roberts calls it “rounding up” in terms of rights, broadening the registered matter unwarrantedly.  Famous cases: Park ‘n Fly case: that was a design mark, not a word mark. TM lawyers know the secret: if a mark is borderline, it’s easier to register as a stylized mark—in blue and cursive when the word alone is unregistrable.  By the time courts look at it, they say the mark is Park ‘n Fly, which it is not: it is a design mark including Park ‘n Fly.

Problems: deadwood on the register; chills competition; chills competitor and consumer speech; bad litigation/TTAB outcomes that don’t serve TM’s goal of protecting consumers and competition; bullying/things done in the shadow of the law. Olympics has said that only official sponsors are allowed to use #olympics. Overprotection + incontestability in particular is a really good way to bully.

Rebecca Curtin, Associate Professor of Law, Suffolk University Law School

Stakes for consumers/creators: focusing on a couple of recent/pending cases in the doll industry. Artisan dollmaker/embroiderer on Etsy who focuses on folk art dolls, including those depicting Frida Kahlo (sometimes as she depicted herself in self-portraits). One showing her w/spinal injury was taken down b/c of takedown from Frida Kahlo rights-claiming company. If it was ©, we could discuss transformativeness, but that’s not the issue b/c the corp doesn’t hold any © or right of publicity interests; what it does claim is a TM for Frida Kahlo for games, playthings, and dolls, assigned by Kahlo’s niece.  Repeated takedowns can get her banned from Etsy; she filed a declaratory judgment. This artist isn’t alone in depicting Kahlo in multiple media, including dolls; enforcement efforts threaten diversity.  Ironically (?), the corp licensed the creation of Frida Kahlo Barbie, which outraged the family b/c it depicted her as lightskinned, and erased her unibrow and mustache and prosthetic limb. They successfully enjoined sale of the doll in Mexico. Meanwhile, the artist is forced to bear the expense of litigating to use Kahlo’s name to accurately describe her works. 

Overreach both of existence of protection and its scope. Names of historical figures/public domain characters are descriptive at best for dolls that depict them. Secondary meaning? Unlikely where the figure looms large in the public imagination, but there are complications about how to describe descriptiveness and also incontestability limits the ability to use descriptiveness to cancel a mark. Also, approaching this as distinctiveness is unsatisfying, b/c it fails to consider cultural value of name in relation to the goods—it’s not just a semantic Q of name’s relationship to the good.  Failure to function as a mark, genericism are other alternatives. The dolls embody the character: I bought my daughter a Cinderella last Christmas.  Also descriptive fair use: this is a Frida Kahlo doll.

If there are so many doctrines preventing the granting/enforcement of such rights, why is there a case here?  The toy industry is where art and merchandise collide forcefully—sometimes the merchandise comes first and often generates more revenue than the sale of the underlying expressive works, b/c the industry has learned that toys with a backstory sell better. 

In the middle of opposing “Rapunzel” for dolls/toy figures.  Fairy tale appropriation strategy: has tried this with Snow Maiden, which was issued w/o an Office Action even though it’s a Russian folktale; Snow Queen for dolls likewise (Hans Christian Anderson); Little Mermaid for dolls, though that was refused as descriptive and TTAB affirmed.  TMEP now cites the Little Mermaid case to say that public domain character names are at best descriptive of dolls depicting the character.

The key here is consumer interest in receiving expression.  Giving one company a monopoly on Rapunzel makes it harder for others to interpret the fairy tale’s legacy.  A registration is a powerful tool.

Rebecca Tushnet, Frank Stanton Professor of First Amendment Law, Harvard Law School

Empirical work: are we running out of trademarks?  Jeanne Fromer & Barton Beebe have shown that yes, we appear to be, across pretty much all classes of goods and services.  You can’t have your cake and eat it too: you can’t have over 100,000 new registrations a year and have broad rights for them too, but the system has too long pretended that’s not the case.  PTO has seemingly gotten more attentive to some of the use questions Professor Roberts has focused on. TM lawyers are unhappy with the trend and I get why they feel “why are our clients being asked to provide better specimens of use and proof of use as a mark when it didn’t happen to clients 10 years ago?” but I don’t think the answer is to stay with the old standards.

A couple of additional points: Amazon/ICANN and private rights are having the same sets of struggles, including rounding up for domain names.  Abuse is already happening—rounding up for design marks in ICANN; manipulation of Amazon.  Legitimate businesses should not celebrate the existence of these new mechanisms if they aren’t going to be transparent and provide procedural protections.

Second, legal doctrine tends to get more complicated over time, developing what I call epicycles.  This is bad for people who don’t have much money: it means they are less able to assert valid claims and less able to defend against invalid claims.

My poster child: Gordon v. Drape Creative: Honey Badger Don’t Care

Problem of granting rights too readily in the first place: it’s not a trademark, it’s a punchline, it doesn’t serve a trademark function

Use as a mark

But also, because the court rounded up and accepted the validity of the mark, a problem of adding complexity to doctrines designed to protect free speech: it decided that because the defendant’s use was also use as a punchline, it might not be protected by the First Amendment as an expressive use; maybe it was explicitly misleading.

Grinvald: what do you do?

RT: We have tools for giving the benefit of the doubt to one side if we care about the social interest at stake. Qualified immunity; defamation doctrine. We can do the same thing for nonadvertising uses.

Curtin: a number of principles as suggested in the discussion of dolls.

Roberts: failure to function at the PTO could be handled better; abolish incontestability; eliminate the rule of doubt/reverse it. Wait for a showing of secondary meaning, don’t publish it. Close scrutiny of statement of use: more than ½ of applications are ITUs and the PTO doesn’t seem to pay as much attention to the specimen of use.  Give the PTO the chance to indicate explicitly in the file wrapper the contours of the mark, and courts should pay attention to those limits. Remember that the presumption of validity is rebuttable; courts think that failure to function and descriptiveness are moot if marks have been in use for a while but that’s not true.

Grinvald: is there real change now?

RT: I think the PTO’s official policy on some of this has clearly changed and examiners are picking up on it but right now the system is so big that you need big data analysis to be sure, w/500,000 applications pending at any given time.

Grinvald: how (if at all) can we help small businesses like the Etsy artist?

Roberts: Student clinics.  Every school could have a small business clinic, which is a good fit for TM law b/c the timing works.

Curtin: organizations like Volunteer Lawyers for America.

RT: Nothing in the TM space is going to solve the problem of vast resource disparities between large and small. That said, rules offer different paths to exploitation than standards.

Curtin: relevant Q: can we expect large corporations to do the work of vindicating interests?  Why didn’t Disney oppose the Rapunzel application? Probably because Disney reasonably expects not to be sued by the TM claimant, and so it’s not worth the opposition.

Grinvald: is it really grant of registration or overenforcement?  [It’s both.]

Q: is there systematic underprotection of TM owners?  11^th Cir. case: Savannah College of Art & Design v. Sportswear Inc.  If you put Suffolk Univ. on T-shirts, you get their apparel store.  It’s a good business model—they stay away from big schools like Harvard or MIT, but not from small schools. Before this case, SCAD sent C&Ds; they sell t-shirts w/ the name of the school, sometimes with the color of the school, sometimes w/info like established 1989 or whatever.  They generally last out the schools/settle w/them.

RT: I think it’s not TM confusion: consumers generally think they’re showing their own commitments when they buy the merchandise; they don’t generally think they’re buying authorized stuff, but they do think it’s morally right to give the school some of the money. I don’t hold the view that the school should morally get paid, but one can; I just don’t think it’s a confusion issue.  Where I do think TM owners are underprotected is phishing, though I couldn’t off the cuff write a rule that would be limited to phishing and not easily abused.

Curtin: what matters is if they think the website is authorized/they’re pretending to be authorized by SCAD.  [I don’t think that’s what matters unless it’s material to consumers—and it may be, though the empirics of this aren’t strong.]